UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`APOTEX CORP.
`APOTEX, INC.
`Petitioner
`
`v.
`
`
`ALLERGAN, INC.
`Patent Owner.
`___________________
`
`Case IPR2015-01282
`Patent 8,629,111
`____________________
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317
`
`
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`APOTEX CORP.
`APOTEX, INC.
`Petitioner
`
`v.
`
`
`ALLERGAN, INC.
`Patent Owner.
`___________________
`
`Case IPR2015-01282
`Patent 8,629,111
`____________________
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317
`
`
`
`
`
`
`
`
` Joint Motion to Terminate
`IPR2015-01282
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Apotex Corp. and
`
`Apotex, Inc. (“Petitioner”) and Patent Owner Allergan, Inc. (“Patent Owner”)
`
`jointly request termination of this inter partes review (IPR) of U.S. Patent
`
`8,629,111 (“the ’111 patent”), Case No. IPR2015-01282. The parties note that
`
`the Decision on Institution is currently set for Wednesday, December 16, 2015.
`
`The parties have settled their disputes, and have reached agreement to
`
`terminate this IPR. In accordance with 37 C.F.R. § 42.20(b), the parties received
`
`authorization from the Board to file this motion on December 15, 2015.
`
`Termination of this proceeding is proper for at least the following reasons:
`
` The parties are jointly requesting termination. 77 Fed. Reg. 48756,
`
`48768 (Aug. 14, 2012) (“There are strong public policy reasons to
`
`favor settlement between the parties to a proceeding”) (emphasis
`
`added). Both Congress and the federal courts have expressed a strong
`
`interest in encouraging settlement in litigation. See, e.g., Delta Air Lines,
`
`Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ.
`
`P.] 68 is to encourage the settlement of litigation.”); Bergh v. Dept. of
`
`Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors
`
`settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal
`
`Circuit places a particularly strong emphasis on settlement. For example,
`
`it endorses the ability of parties to agree to never challenge validity as
`
`1
`
`
`
` Joint Motion to Terminate
`IPR2015-01282
`part of a settlement. See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362,
`
`1370 (Fed. Cir. 2001); see also Cheyenne River Sioux Tribe v. U.S., 806
`
`F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to
`
`reduce antagonism and hostility between parties). Here, no public interest
`
`or other factors weigh against termination of this proceeding.
`
` The Board has not yet “decided the merits of the proceeding before the
`
`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added);
`
`77 Fed. Reg. 48768 (“The Board expects that a proceeding will terminate
`
`after the filing of a settlement agreement, unless the Board has already
`
`decided the merits of the proceeding.”) Indeed, the Board has not yet
`
`made a decision on institution of this inter partes review. Apotex filed its
`
`petition for inter partes review on June 4, 2015. No Motions are
`
`outstanding in this proceeding. No other party’s rights will be prejudiced
`
`by the termination of this inter partes review. This supports the propriety
`
`of
`
`terminating
`
`this proceeding even
`
`though
`
`the settlement and
`
`termination provisions of 35 U.S.C. § 317, on their face, apply only to
`
`“instituted” proceedings. 77 Fed. Reg. 48680, 48686 (Aug. 14, 2012)
`
`(And 35 U.S.C. 317(a) provides “An inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the
`
`joint request of the petitioner and the patent owner, unless the Office has
`
`2
`
`
`
` Joint Motion to Terminate
`IPR2015-01282
`decided the merits of the proceeding before the request for termination is
`
`filed.”)
`
` The only related pending district court litigation regarding the ’111 patent
`
`is Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al., &
`
`Innopharma, Inc., C.A. No. 2:15-cv-1455-JRG (E.D. Tex. 2015)
`
`(consolidated) and Allergan, Inc. v. Innopharma, Inc., & Pfizer, Inc.,
`
`C.A. No. 1:15-cv-00815 (D. Del. 2015). The validity of the ’111 patent
`
`was already previously challenged (unsuccessfully) by a generic drug
`
`manufacturer in the U.S. District Court for the Eastern District of Texas,
`
`Allergan, Inc. v. Actavis, Inc. et al., Case No. 2:14-cv-00638-JRG (E.D.
`
`Tex. 2014).
`
` Further, the parties are unaware of any other matter before the USPTO
`
`that would be affected by the outcome of this proceeding. And there are
`
`no pending related proceedings regarding the ’111 patent before the
`
`Board.
`
`
`
`
`
`3
`
`
`
` Joint Motion to Terminate
`IPR2015-01282
`The settlement agreement between the parties has been made in writing, and
`
`a true and correct copy shall be filed with this Office as business confidential
`
`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)-(c).
`
`
`
`Respectfully Submitted,
`
`/Eldora L. Ellison/
`Eldora L. Ellison (Reg. No. 39,967)
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`P: 202.772.8508; F: 202.371.2540
`eellison-PTAB@skgf.com
`Counsel for Petitioner
`
`/Dorothy P. Whelan/
`Dorothy P. Whelan (Reg. No. 33,814)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`P: 612.337.2509; F: 612.288.9696
`Whelan@fr.com
`Counsel for Patent Owner
`
`Dated: December 15, 2015
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
` Joint Motion to Terminate
`IPR2015-01282
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Joint Motion to
`
`Terminate Pursuant to 35 U.S.C. § 317 was served on December 15, 2015, by e-
`
`mail directed to counsel of record for the Patent Owner as follows:
`
`Dorothy P. Whelan
`Michael Kane
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Whelan@fr.com
`IPR13351-0059IP1@fr.com
`
`
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
` /Eldora L. Ellison/
` Eldora L. Ellison (Reg. No. 39,967)
`Date: December 15, 2015
` Lead Attorney for Petitioner Apotex Corp. and
`
`
`
`
`
` Apotex, Inc.
`
`
`
`
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005 - 3934
`(202) 371-2600
`
`2745692_1
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